Appeal No. 1997-4310 Page 7
Application No. 08/371,362
claims require treating. It is significant that a wax1
emulsion coated paper, including the type of coating and paper
product that Gotoh describes, has been distinguished from the
hot melt wax coated paper that is treated by the subject
process on the record before us. See, e.g., pages 12 and 13
of the brief, pages 1-6 of the reply brief, and the carryover
paragraph bridging pages 6 and 7 of the specification.
The examiner does not seem to take issue with the
aforementioned distinction between such coatings and papers so
coated, but rather the examiner’s position appears to be
premised on considering the hot melt wax coated paper
limitation as inconsequential (answer, page 5 and supplemental
answer, paragraph bridging pages 1 and 2). That position runs
afoul of the basic premise that a sustainable rejection under
§ 103 must address the claimed subject matter as a whole
including all of the limitations thereof. Here, the
examiner’s failure to adequately address the hot melt wax
coated paper limitation is fatal to the stated rejection. In
1Laumann and Savage are described above with regard to
the rejection of claims 23 and 57-61 over only those
references.
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